WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vistra Group Holdings S.A., Offshore Incorporations HK Limited v. Registration Private, Domains By Proxy, LLC / Maksim Sergeev
Case No. D2017-1136
1. The Parties
Complainants are Vistra Group Holdings S.A. of Luxembourg City, Luxembourg and Offshore Incorporations HK Limited of Hong Kong, China, represented by NLO Shieldmark B. V., Netherlands.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Maksim Sergeev of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <oiltrand.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2017. On June 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on June 13, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 11, 2017.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 17, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of various registrations for the word and device mark:
This includes European Union Trade Mark (“EUTM”), registration number 013733498, registration dated June 11, 2015, in international classes (“IC”) 35, 36 and 45, covering business management and management consulting, financial services and legal services, as further specified; registration on the Trade Marks Registry, Intellectual Property Department, Hong Kong, China, registration number 303176956, registration dated May 21, 2015, in IC 45, and; registration on the United Kingdom Trade Marks Registry, registration number 00003093790, registration dated June 12, 2015.
Complainant is owner of registrations of a triangle device mark standing alone (shown above, excluding the word OIL), among others, on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 5004195, registration dated July 19, 2016, in ICs 35 and 36, and; and international trademark registration, registration number 1254046, registration dated April 13, 2015, designating, among others, the Benelux countries and Switzerland.
Complainant is the owner of registration of the word trademark OIL on the Trade Marks Registry, Intellectual Property Department, Hong Kong, registration number 199400190, date of registration January 14, 1994, in IC 42, covering “company incorporation” (all included in Class); Complainant is the owner of registration of the word trademark OIL on the Trade Marks Register of China, registration number 01233347, registration dated October 16, 2006, in IC 42, and; Complainant is the owner of registration of the word trademark OIL on the Trade Marks Register of the Intellectual Property Office of Singapore, registration number T0600581E, registration completion dated March 27, 2007, in IC 42, covering “company formation and registration services”.
Complainant’s current website indicates that as of February 13, 2017, “OIL has been rebranded to Vistra”.1 Complainant has not in its Complaint provided details regarding the nature of its business, other than to state that the website operated by Respondent offers services claiming to be “identical or at least similar to the services for which the Complainant’s trademarks are registered.”
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on November 4, 2016, and the disputed domain name has been registered to this registrant since at least June 11, 2017. The language of the Registration Agreement is English.
Complainant has provided undated screenshots of a website identified by the disputed domain name which appears to be in the Russian language, on which appears the term “Oil” (larger font) “Trand” (smaller font), accompanied by the distinctive triangle device forming part of Complainant’s word and device service mark, with a virtual button for two YouTube videos. Each shows a gentleman in business attire. The disputed domain name is not currently associated with a web page. Complainant has also provided a screenshot from YouTube.com showing six videos that it indicates were uploaded by Respondent. The content is shown on small screenshots from YouTube.com and appear to be in the Russian language. Two of the YouTube.com video screenshots show oil drilling equipment, one of which is accompanied by Complainant’s distinctive word and device service mark, with the word “trand” included in smaller font beneath OIL. Two of the YouTube video screenshots show what appear to be diagrams with flows of funds, and both of which are accompanied by Complainant’s word and device service mark. Complainant has not provided translation into English (the language of this proceeding) of Respondent’s website or the YouTube video screenshots.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the word and device mark OIL and triangle (see Factual Background, supra) and the word service mark OIL.
Complainant contends that the disputed domain name is confusingly similar to its trademark “used in its entirety without any alteration only the addition of the word TRAND -- which as far as we know has no descriptive meaning in the English language, but perhaps it does in the Russian language. Even if TRAND is not descriptive, the similarities between the signs is obvious. This proves that the Domain Name oiltrand.com is infringing our client’s registered trademark rights.”
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because: (1) Respondent has no earlier trademark rights; (2) “the Respondent claimed to be part of the [Complainant’s] legal structure, while this is not the case”, and; (3) Respondent’s uploading of videos to YouTube is a scam and harms Complainant’s reputation.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant acquired trademark rights prior to registration of the disputed domain name in 2016; (2) Respondent used a trademark identical or at least highly similar to Complainant’s without its permission while claiming to use Complainant’s legal structure and inviting consumers to invest money; (3) Respondent attempted to disrupt the business of Complainant, and; (4) Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. There is nothing in the record of this proceeding to indicate that the email transmission to Respondent was unsuccessful. It appears that express courier physical delivery could not be completed. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the word and device service mark OIL and triangle (as shown in Factual Background, supra) based on registrations as an EUTM and otherwise. Complainant has also provided evidence of rights in the word service mark OIL based on registration on the trademark registers of China, Hong Kong, and Singapore (see Factual Background, supra). Respondent has not challenged Complainant’s assertions of trademark rights. The Panel determines that Complainant has rights in the word and device service mark OIL and triangle, and in the word service mark OIL.
Complainant has trademark registrations for OIL standing alone with the China, Hong Kong, and Singapore trademark authorities for use in connection with providing services in connection (at least) with company formation. Although Complainant has not provided direct evidence of its use of the OIL service mark for this purpose, registration was granted by the trademark authorities listed above, the registrations remain in force (per the evidence), and Respondent has not contested Complainant’s use in commerce of the service mark OIL.
The word “oil” is ubiquitously used throughout the global commercial world as a generic reference to petroleum. The term is also used for “any of numerous unctuous combustible substances that are liquid or can be liquefied easily on warming, are soluble in ether but not in water, and leave a greasy stain on paper or cloth”. The disputed domain name combines the word OIL with the term “trand” to form <oiltrand.com>. According to Complainant, the term “trand” has no known descriptive meaning in the English language. Complainant has not identified another language in which the term has a meaning.
Complainant may not have been able to register the service mark OIL in connection with its generic or commonly descriptive meaning (i.e., petroleum or a cooking product). The term is not, however, generically or descriptively associated with the provision of company registration or other legal services (i.e., Complainant’s services). Under conventional trademark law principles the term OIL may be distinctively associated with the company incorporation services of an enterprise as an arbitrary type of association (as in “Apple” for smartphones). Respondent might have, but did not, challenge this association, and the Panel does not consider it appropriate to sua sponte challenge the recognition of service mark rights in favor of Complainant by the listed authorities.2
Complainant has registered the word and device service mark OIL and triangle in a number of jurisdictions in connection with various services, including financial services. OIL is the dominant part of that word and device mark in terms of sound and meaning. Because of the mainly generic or commonly descriptive meaning of “oil”, in the absence of Complainant’s independent registration of that word the Panel would be reluctant to use it (isolated from the triangle device) as the basis for assessing confusing similarity with the disputed domain name. The Panel relies on Complainant’s registration of the word service mark OIL (standing alone) as the basis for comparison with the disputed domain name. Nonetheless, the Panel observes that Respondent has used Complainant’s distinctive word and device mark (with inconsequential modification) on its website and on YouTube videos in order to create the appearance of an association with Complainant and its services.
In assessing confusing similarity between the disputed domain name and Complainant’s word service mark, the Panel takes into account that Respondent has made clear its intention to take advantage of the reputation and goodwill of Complainant associated with the word service mark by making substantial use of its word and device mark on its website and in YouTube videos. The word and device mark is distinctive, and its adoption by Respondent is not accidental.
To satisfy the requirements of paragraph 4(a)(1) of the Policy, Complainant must show that the disputed domain name is confusingly similar to a service mark in which Complainant has rights. Confusing similarity means that the disputed domain name is sufficiently like Complainant’s trademark that an Internet user or consumer viewing the disputed domain name may identify Complainant’s service mark and may be confused as to whether it is associated with Complainant and its business. There is a distinction between “likelihood of confusion” as used in many jurisdictions to assess potential trademark infringement and “confusing similarity” as used in the Policy in comparing domain names and trademarks. WIPO Overview 3.0 refers to a standard often used by panels in assessing confusing similarity as inquiry into whether the trademark or service mark is “recognizable” within the disputed domain name. “Recognizability” may include by technological means such as search algorithms.3
The Policy was adopted to address abusive domain name registration and use. The characteristics of domain name abuse have changed since the first panel decision under the Policy was made in 1999, as the capacity of search algorithms has evolved, and as the Internet has become a critical part of the global financial and commercial infrastructure. There is an increasing global awareness of the importance of protecting the interests of all users of the Internet against abuses that include financial fraud, ransomware, cyber-terrorism and so on. The “evolution” of jurisprudence under the Policy balances the legitimate interests of domain name registrants with the need to protect Internet users against abuse.
The disputed domain name is <oiltrand.com>. Complainant’s service mark OIL is “recognizable” within the disputed domain name. The additional letters forming “trand” do not have a known meaning in any language, though it is of course difficult to exclude all possible meanings in all languages. This is not a situation in which a domain name registrant has added a descriptive or geographic term to a trademark in a way that reinforces or at least maintains an obvious association with the original mark. Absent other factors, it is debatable whether the term “oiltrand” would be considered confusingly similar to OIL (e.g., under the conventional test of visual impression, sound and meaning). In this case, however, it is evident that Respondent adopted the disputed domain name to establish an association with Complainant. Respondent used Complainant’s distinctive OIL and triangle device mark on its website identified by the disputed domain name, and in related YouTube videos. An Internet user or consumer viewing the disputed domain name in association with Respondent’s website (and its YouTube videos) would likely draw the conclusion that Respondent is associated with Complainant. The disputed domain name is “enough alike” that it supports such an association.
Based on this combination of factors, the Panel finds that the disputed domain name is confusingly similar to Complainant’s OIL service mark.
Complainant has established that it owns rights in the service mark OIL and that the disputed domain name is confusingly similar to that service mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name is outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent has not offered any argument or justification for its use of Complainant’s service mark in connection with directing Internet users to its website that made prominent use of Complainant’s distinctive word and design service mark, including in YouTube videos that appear to offer financial services. Such use appears intended to take unfair advantage of Complainant’s reputation and goodwill in its service mark.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” These include that, “(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Respondent used the disputed domain name incorporating Complainant’s OIL service mark to direct Internet users to a website where it prominently displayed Complainant’s distinctive word and device service mark and included videos that appear to offer services under that service mark. Respondent was not authorized to make such use of Complainant’s service mark. Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s OIL and OIL and triangle device service marks as to the source, sponsor, affiliate or endorser of Respondent’s website. Such use appears intended to take unfair advantage of Complainant as well as to deceive Internet users. In addition, Respondent’s use of the disputed domain name may disrupt Complainant’s business. Respondent’s use of Complainant’s service mark in the disputed domain name evidences bad faith within the meaning of paragraph 4(b) of the Policy.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <oiltrand.com> be transferred to Complainant.
Frederick M. Abbott
Date: July 25, 2017
1 https://www.vistra.com/acquisitions/OIL, Panel visit of July 24, 2017.
2 In recognizing Complainant’s rights in the word service mark OIL standing alone the Panel does not suggest that those rights may not be subject to challenge in some jurisdiction(s).
3 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, sections 1.7 & 1.8.